Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Merpel, Jeremy Phillips, Eleonora Rosati, Nicola Searle, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

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Tuesday, 20 August 2013

The following piece is posted by Jeremy for fellow Kat Neil, who is currently on his travels.

"Daddy, daddy! That naughtyman said 'iPad' again!"

It seems so natural that one hardly notices what has happened. You are listening to a radio interview programme and, more particularly, to one of the channels dedicated to business news and commentary. The subject at hand is the state of the US airline industry and the question is when US domestic carriers will be rolling out services such as in-flight wifi (or the like) connectivity. The interviewer, a senior commentator for the channel, states wistfully that he can hardly wait for the day that he can power-up his smart phone on the plane while typing away on his tablet. More precisely, he states that he can hardly wait for the day when he can "fire-up his iPhone while working on his iPad." And the interview then moves on.

This Kat suspects that most Kat readers will not find anything objectionable or even worthy of further comment in connection with the brief exchange described above. And yet -- this Kat wonders. After all, there is a full cottage industry of product placements in movies and other visual media platform. We are so accustomed as viewers to this phenomenon that, when we see a branded product featured as part of a movie or television programme, we more or less understand the dual role that the product plays. First, the item itself serves a role in the story. If the plot calls for a camera, what better way to make the point than pointedly to display a Nikon-branded camera. As well, the prominence of the Nikon mark serves a promotion and/or advertising function, for which the company presumably paid a sum to secure the placement (full disclosure: this Kat has no interest or connection with Nikon-branded products; indeed, he owns no camera at all). The rules of the product placement game are understood, even if the mark serves this double purpose.

But in the radio broadcast scenario described above, there is presumably no intentional "placement" of "iPhone" or "iPad" in connection with the commentator's reference to these marks. (Further full disclosure: this Kat owns Apple products, but neither an iPhone nor iPad). Rather, the commentator found it natural and unexceptional to describe the smartphone product by reference to the specific marks in question. As such, a number of questions are raised:

1. Should (or does) news broadcasting have a set of guidelines to cover this situation? After all, if I am a regular advertiser on the programme, and my product is advertised during the slot allotted for advertisements within the context of the overall broadcast, I may well feel slighted, if not more, by this free advertising. "It is tough enough to try and grab the listener's attention to my advertising", the advertiser says to himself, "especially when the advertisement is anyway disconnected from the programme contents." And yet, along comes this commentator, who makes use of these proprietary marks in a demonstrable fashion within the flow of the broadcast discussion itself. Is this fair, this Kat asks?

Is the ultimate generic terma truly well-known mark?

2. How do we understand the reference to "iPhone" and "iPad"? In effect, the use of these marks seems to take the place of a reference to the relevant generic terms—smart phone and tablet. We are taught that trade marks are an efficient form of commercial communication in identifying the source of the relevant good or service. When I want to refer to the fast-food restaurant across the street from this Kat’s lair, I use the mark "McDonalds" rather than describing "that certain purveyor of fast food and related franchise services developed by Mr Ray Kroc and with its company headquarters in Oak Brook, Illinois). In both cases, the goal is to refer to the source of the goods, but the use of the trade mark is the more efficient way to do so.

3. In our case, however, the purpose of the use of the “iPhone” and “iPad” marks is not to provide a more efficient form of commercial communication about the source of the goods. Rather, they are being used as a form of quasi-generic term in the sense that, instead of referring to a “smart phone” and a “tablet”, the commentator uses the proprietary marks, presumably as exemplars for the two product categories. But is the use of such prominent marks as “iPhone” and ‘iPad” in this context simply evidence that these marks have acquired status as a well-known mark?

9 comments:

Andy J
said...

My take would be that the commentator just said iPhone and iPad because those are the products he owns, therefore they would be the devices he would want to access during a flight. Perhaps he was being accurate and speaking personally, without necessarily being aware of the product endorsement he was inadvertently making.I suggest that Apple would be happy to see its products achieve near-generic status, without the probable brand dilution which might come with complete generic status.For what it is worth, the BBC staff are very aware of their PSB policy of impartiality, and it is common to hear commentators and others say, often with a knowing radio wink, "other brands/products are available" following the utterance of a brand name by a speaker. This is done in much the same humorous way that "allegedly" might be tacked onto a light-hearted statement or opinion which might be mildly defamatory or opprobrious, as if to ward off the threat of lawyer's letters.

The use of the trademark may have been in innocent slip, or it may not have. In which case it wouldn’t be a first for a radio host and would place them in some well respected (at least by some) company.

Some marks have in fact been used in a generic fashion over decades. We were xeroxing papers much before we started googling for information. There are many such brands who have risen to great heights to render their names as synonyms to product categories.

Richard Posner and Frank Easterbrook in Ty Inc. v. Ruth Perryman, CoA (7 Cir.), October 4, 2002 (p. 9):‘…Although there is a social cost when a mark becomes generic—the trademark owner has to invest in a new trademark to identify his brand—there is also a social benefit, namely an addition to ordinary language. A nontrivial number of words in common use began life as trademarks…An interpretation of antidilution law as arming trademark owners to enjoin uses of their mark that, while not confusing, threaten to render the mark generic may therefore not be in the public interest…’

I would say that, not only there are quite strict guidelines in many broadcasters on the subject of citing trademarks, but those go a long way back: I remember to have read about an angry letter from the boss of Rover to the BBC, back in the 1950s, because the BBC pointedly refused to call Land Rovers by their name, on the grounds that it could not "advertise" a given brand, yet BBC journalists routinely referred to all sorts of four-wheel-drive vehicles (including Land Rovers) as "jeeps"...So, if that journalist happily referred to his "iPhone" and "iPad" live, I suspect it wasn't altogether innocent.

I agree with the first comment saying that the commentator just said iPhone and iPad because those are the products he (probably) owns. However, I believe that some guidelines should cover this situation and ask commentators to say general terms, such as tablet or smartphone in order to avoid this kind of “free advertisement”.

I think the product placements are much more important on visual media platform such as Youtube. Fortuitously, I watched the last video of Avril Lavigne (bad taste, I know … but I was a fan … a long time ago). Anyway... it starts with Avril L. receiving a call (big zoom on the Sony phone in a glass of water!!!) and saying "my new Sony phone is ringing” (another big zoom on the back of the phone “Xperia”). Of course, it’s summer time, it’s hot, we all put our phone is a glass of water… dah! I believe that the impact for Sony is probably more significant in a video than a radio interview. But I don’t think there are any rules against it or regulating it, but maybe something needs to be done here. At the end of the day, it’s a win-win situation for singers and rich brands; and it’s probably good like this?!

And here is the link of the video: http://www.youtube.com/watch?feature=player_embedded&v=uuNTO31FlY8

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Gama and Pal: is the wet-wipe packaging confusingly similar?

Yesterday morning the IPKat posted this item on an ongoing passing-off action, Gama Healthcare Ltd v Pal International Ltd. in which Gama objected that Pal's wet-wipe packaging would lead people to think it was theirs.

When that Katpost went live, there were no examples of the parties’ packaging to show readers. The Kats have since received images of both, which they reproduce below, and they ask readers, through the medium of the sidebar poll below, if they think that Pal's packaging might be mistaken for Gama’s one.

Pal's packs are sold under the Medipal brand and Gama's are sold as Clinell products.

Caveat: this poll is conducted purely for the amusement of readers of this weblog. It is not mandated by the trial judge or commissioned by either party; it is not based on any methodology and it is not intended to have any evidential value at all.

Wet-wipe packaging: do you think you could pick up a packet of Medipal, thinking it was Clinell?

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